Drafting and Defending Software Patents to Survive Section 101 and AIA Challenges

Anticipating and Minimizing the Risk of 101, 103 Rejections, Recent Court Guidance

Recording of a 90-minute CLE webinar with Q&A

Conducted on Tuesday, July 17, 2018

Recorded event now available

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Program Materials

This CLE webinar will provide guidance to patent practitioners on how to draft their patent applications to overcome both Section 101 and AIA challenges. This panel has decades of experience in Section 101 and has represented patent owners numerous times in AIA reviews.


What is patent eligible in the context of software-related inventions is not always clear. Patent practitioners and applicants have struggled since the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l (2014) to understand what qualifies as an abstract idea.

Recent Federal Circuit decisions on software-related claims have provided more guidance on patent eligibility. For example, the court’s decision in Finjan, Inc. v. Blue Coat Systems, Inc. (January 10, 2018) found the claims recited patent-eligible subject matter. Because the invention in question did not cover an abstract idea, the second step of the Alice test was unnecessary. Understanding the court’s rationale in this and other recent decisions will increase the likelihood that a patent drafter’s claims will pass step one or two of the Alice patent-eligibility test. Also, the Federal Circuit recently has more clearly delineated when § 101 is properly decided via a motion for summary judgment, a motion for judgment on the pleadings, or a motion to dismiss. Understanding this guidance is critical to defending against pre-trial § 101 attacks.

Most patent litigations today involve a co-pending AIA review. It is therefore important to ensure that patent practitioners draft their specifications and claims so as to increase the likelihood of the patent surviving either an inter partes review or a covered business method review.

Listen as our authoritative panel of patent attorneys reviews the guidance that has been provided by the courts in the post-Alice decisions. The panel will provide guidance for drafting patent applications/claims to survive §101 rejections and AIA challenges as well as provide guidance for defending § 101 challenges at the district court and the PTAB.



  1. Challenges in drafting software patents
  2. Guidance from recent Federal Circuit decisions, including ex parte PTAB appeal decisions reversing examiner rejections
  3. Best practices for drafting software patent claims
    1. Benefits of claimed inventions
    2. Source code
    3. Anticipating and minimizing the risk of rejections
  4. Defending §101 challenges at the district court and PTAB


The panel will review these and other high priority issues:

  • What are the hurdles for patent counsel to demonstrate a software-related claim is not abstract?
  • If an abstract idea is found, how can patent practitioners pass Alice’s step two?
  • What guidance have the courts provided in recent decisions concerning patent eligibility for software-related inventions?
  • What best practices should counsel use to help software-related inventions survive AIA challenges?
  • What is the best way to defend against §101 pre-trial attacks?


Kiklis, Michael
Michael L. Kiklis

Bass Berry & Sims

Mr. Kiklis focuses on PTAB litigation as well as district court patent litigation. He also handles Federal Circuit...  |  Read More

Kunin, Stephen
Stephen G. Kunin

Maier & Maier

Mr. Kunin represents clients in post-grant patent proceedings at the U.S. Patent and Trademark Office. He also...  |  Read More

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